Monumental Appellate Court Decision on Disparaging Trademarks: Refusing them is Unconstitutional

Posted by Kaustubh Nadkarni on December 22, 2015

The Federal Government bans trademarks that contain disparaging or offensive language. However, and astonishingly, the U.S. Court of Appeals for the Federal Circuit has ruled that the Federal Government’s ban on offensive or disparaging trademark registrations is indeed a violation of the First Amendment.


The Trademark Office, from time to time is encountered with the possibility that a potential trademark contains “immoral, deceptive, or scandalous matter” or may be disparaging to “people, institutions, beliefs, or national symbols.” This language comes from Section 2(a) of the 1946 Lanham Act (also called The Trademark Act) and is a “relatively uncommon” reason as to why a trademark can be denied.  Specifically, the Act states:


"No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…." Lanham Act, Section 2(a), 15 U.S.C. §1052.


The debate on the Constitutionality of denying disparaging trademarks by the Trademark Office has been hotly debated in recent years. For instance, Washington Redskins, a professional football team, had their trademark “Redskins” revoked by the Trademark Trial and Appeal Board (TTAB) based on the same Section under the Lanham Act. This is because the term “Redskins” is considered to be offensive and demeaning by many people, including a majority of Native Americans.

In that case, after the revocation of their mark, the Washington Redskins sought to address this issue in the Federal Court for the Eastern District of Virginia. The Federal Court denied Washington Redskins’ First Amendment Argument. There and then, the Court stated that did not have a viable claim that Section 2(a) violates the First Amendment and that the TTAB was authorized to cancel registration of the "Redskins" trademarks under Section 2(a) because they may be disparaging to Native Americans.

In particular, the Court determined,


“that cancelling the registrations of the Redskins Marks under Section 2(a) of the Lanham Act does not implicate the First Amendment as the cancellations do not burden, restrict or prohibit [Pro-Football, Inc.'s] ability to use the marks."


Now, a separate case was filed by members of a rock band called “The Slants”, who were denied federal registration of their proposed mark “The Slants.”

The Trademark Office refused registration stating that the name “The Slants” was disparaging and offensive to Asian Americans, declared again by the Lanham Act’s Section 2(a).

The rock band appealed the case in the United States Court of Appeals for the Federal Circuit. The Court accepted the rock band’s notion that the USPTO's "The Slants" refusal, done pursuant to a law against "scandalous, immoral, or disparaging marks," constitutes a violation of First Amendment rights.

Accordingly, in the decision, Federal Circuit Judge Moore concluded,


"The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks," she writes. "It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech."


However, it is to be noted that the Court of Appeals expressly stated a footnote that the holding is limited to the constitutionality of the disparagement provision in the Lanham Act and might not touch on the immoral or scandalous provisions.

This means that the USPTO may continue to deny other disparaging marks and that courts may have to decide whether to apply this rule broadly on a fact by fact basis.



Topics: Intellectual property, Business, Federal Circuit, Intellectual Property Law, Trademarks